2.23.13.4 Amending a Convention Patent Request to a Non-Convention Patent Request

Note: COG should be informed of any amendment to the patent request (see 5.5.4 Invention Details).

A patent request for a Convention patent application, upon which a patent has not yet been granted, can be amended to a non-Convention patent request (sec 104).

In general, a request to amend a Convention to a non-Convention patent request will, if allowed, ‘materially alter the meaning or scope of the request’.  This is because the amendment will prima facie change the priority date of the claim(s) of the complete specification, resulting in a later priority date than would otherwise be the case had the patent request remained a Convention one.

Prior to acceptance, leave to amend can be granted and the amendment allowed without advertisement.  After acceptance leave to amend must be advertised before the amendment is allowed (reg 10.5(2)).

As indicated above, such an amendment prima facie results in the claims having a later priority date, i.e. the date of filing of the original patent request and complete specification.  Therefore, any previous novelty assessment may need to be reviewed if the application has been examined and accepted. If examiners are aware of any documents that would cast doubt on the novelty of the claims if the amendment was made, leave to amend should not be granted.  Instead, examiners should consult a supervising examiner to determine whether the case should be referred to Patent Oppositions to initiate re-examination.